Ex Parte GREGORY-BROWN et al

Patent Trial and Appeal Board

May 31, 2018

14033082 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/033,082 09/20/2013
909 7590 06/04/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
BENGT GREGORY-BROWN
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
053677-0425312 7628
EXAMINER
CUFF, MICHAEL A
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
06/04/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BENGT GREGORY-BROWN, DEREK HARP, and
BRAD MCQUAID 1
Appeal2017-008426
Application 14/033,082
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party in interest is Maslow Six Entertainment,
Inc. App. Br. 2.
Appeal2017-008426
Application 14/033,082
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4--9, 11-16, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a system and method for presenting a
virtual game space with discoverable items to be prospected. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system configured to provide a virtual game
to a user, the system comprising:
one or more hardware processors configured
by machine-readable instructions to:
determine a view of a virtual game space for
presentation to a user, the virtual game space
including different spatial zones, the virtual game
space further including a rechargeable resource that is
available to the user within the virtual game space
and that is configured to recharge over time;
associate a limited number of discoverable
items with individual ones of the spatial zones in the
virtual game space such that a majority of the spatial
zones in the virtual game space are not associated
with discoverable items;
receive a user selection of an action to be
performed from among a set of potential actions, the
set of potential actions including a harvesting action
and a locator action, the harvesting action including
obtaining a discoverable item, the locator action
including obtaining an indication of a location of a
discoverable item, wherein:
the harvesting action is associated with a
first cost, the first cost representing a deduction of a
first amount of the rechargeable resource in the
virtual game space; and
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Application 14/033,082
the locator action is associated with a second
cost, the second cost representing a deduction of a
second amount of the rechargeable resource in the
virtual game space;
determine whether the selected action results
in discovery of a discoverable item;
deduct the first amount of the rechargeable
resource, responsive to the harvesting action being
the selected action;
award the discoverable item to the user responsive
to determining that the harvesting action results in
discovery of a discoverable item;
deduct the second amount of the rechargeable
resource responsive to the locator action being the
selected action; and
indicate to the user whether the discoverable item
would have been discovered if the selected action had
been the harvesting action.
REJECTIONS
Claims 1, 4--9, 11-16, and 18 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 4--9, 11-16, and 18 are rejected on the ground ofnon-
statutory double patenting over claim 1-22 of U.S. Patent No. 8,540,566.
ANALYSIS
Claims 1, 4-9, 11-16, and 18-Non-statutory Subject Matter
Based on Appellants' arguments (Br. 4--7), we will decide the appeal
of the claims at issue based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1293-94 (2012), and reaffirmed in Alice
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Corporation Proprietary LTD. v. CLS Bank International, 134 S. Ct. 2347,
2355 (2014). For the first step, we determine whether the claims at issue
are directed to a patent-ineligible concept such as an abstract idea, law of
nature, or natural phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 132
S. Ct. at 1296-97). If so, we advance to the second step where "we consider
the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application" of the otherwise
patent-ineligible concept. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The
Court has described this second step "as a search for an inventive concept-
i.e., an element or combination of elements that is sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
ineligible concept itself." Id. (citing Mayo, 132 S. Ct. at 1294 (internal
quotation marks and alterations omitted)).
Regarding the first step in the Alice Framework, the Examiner finds
that the claims are directed to "a multiple step process ... for providing a
virtual game." Final Act. 3. According to the Examiner, "[t]he concept of
providing a virtual game on a computer is very analogous to the concept of
managing or providing a game of Bingo on a computer," which the Federal
Circuit held amounted to an abstract idea. Id. ( citing Planet Bingo, LLC v.
VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)). The Examiner further
determines that the "additional of limitations that narrow the idea, such as
harvesting, associating cost, deducting an amount of rechargeable resources
and spatial zones, further describe the abstract idea, but do not make it less
abstract." Id.
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Application 14/033,082
Regarding the second step, the Examiner finds that "the claim simply
instructs the practitioner to implement the concept of providing a virtual
game with routine conventional activity specified at a high level of
generality in a particular technological environment." Id. at 4. Thus,
according to the Examiner, "[ w ]hen viewed either as individual limitations
or as an ordered combination, the claim as a whole does not add
significantly more to the abstract idea of providing a virtual game." Id.
Appellants raise several arguments in response. First, Appellants
argue that the claims are directed to patent-eligible subject matter because
they are directed to "a specific technique to improve upon computer
processes for utilizing computer technology to allow the solving of problems
that arise in a game space or virtual space hosted over a network." Br. 5.
Second, Appellants argue that the claims are patent eligible because they
"avoid pre-empting other, sub-optimal ways of performing the alleged
abstract idea with a computer." Id. Finally, Appellants argue that "a patent
examiner cannot properly reject a claim under Section 101 if the examiner
does not provide any evidence that at least a non-computer-implemented
version of a computer-implemented process required by the claims exists in
the prior art." Id. at 6 (citing McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (2016)).
None of Appellants' arguments persuade us of Examiner error. First,
we are not persuaded that claim 1 is directed to "a specific technique to
improve upon computer processes for utilizing computer technology," as
Appellants contend. Claims involving computer technology "might not
succumb to the abstract idea exception" if they purport "to 'improve the
functioning of the computer itself,' or 'improv[ e] an existing technological
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process."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Alice, 134 S. Ct. at2358-59). But methods that use
computer technology "merely as a tool" may be considered directed to an
abstract idea. Id. at 1336. Appellants contend that the claims are directed to
techniques that provide guidance to computer game players to help them
locate items in a virtual game space. Br. 5. While the claimed techniques
may improve a player's virtual gaming experience, Appellants do not
explain how these techniques pertain to improvements to computer
functionality. Nor is it evident that they do so, as the Specification indicates
that the claimed methods are implemented with standard computer and
networking technology. Spec. ,r,r 22-24, Fig. 1.
We are also not persuaded that claim 1 is patent eligible because it has
limited preemptive affect. That claim 1 may not preempt "an entire field" is
not relevant to whether claim 1 is directed to an abstract idea, because "the
exclusion applies if a claim involves a natural law or phenomenon or
abstract idea, even if the particular natural law or phenomenon or abstract
idea at issue is narrow." buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353
(Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at 1303); see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(holding that "[ w ]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility").
Finally, Appellants argue that "a patent examiner cannot properly
reject a claim under Section 101 if the examiner does not provide any
evidence that at least a non-computer-implemented version of a computer-
implemented process required by the claims exists in the prior art." Id. at 6
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(citing McRO, 837 F.3d at 1314). Although Appellants' position is not
entirely clear, Appellants appear to be arguing that, under McRO, a process
implemented on a computer is not an abstract idea if the process is new. We
do not read McRO as altering the Federal Circuit's prior disagreement with
the notion that "the addition of merely novel or non-routine components to
the claimed idea necessarily turns an abstraction into something concrete."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). Thus,
it is not dispositive that the prior art does not teach "a non-computer
implemented version" of any computer-implemented process required by the
claims on appeal. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (holding that "a claim for a new abstract idea is
still an abstract idea.").
Because we are not persuaded that the Examiner erred in rejecting
claims 1, 4--9, 11-16, and 18 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter, we sustain the rejection.
Claims 1, 4-9, 11-16, and 18-Non-statutory double patenting
Appellants have not responded to the Examiner's rejection of claims
1, 4--9, 11-16, and 18 on the ground of non-statutory double patenting over
claims 1-22 of U.S. Patent No. 8,540,566. Therefore, Appellants have
waived any argument of error, and we summarily sustain this rejection
without reaching the merits thereof. See In re Berger, 279 F.3d 975, 984,
985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal).
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Application 14/033,082
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
4--9, 11-16, and 18 as directed to patent-ineligible subject matter, and
summarily affirm the Examiner's rejection of claims 1, 4--9, 11-16, and 18
on the ground of non-statutory double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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